DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: irradiation unit, detection unit, charging unit in claims 1-14.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The terms “in a vicinity” in claims 1, 10 and 20 is a relative term which renders the claim indefinite. The term “in a vicinity” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The instant disclosure fails to disclose what amount of spatial location variance would fall within or outside of the phrase “in the vicinity”. As such it is unclear how close or far the conductive portion has to be relative to the droplet to be considered, within a vicinity. For examination purposes the examiner is interpreting the noted phrase to be any location that at least interacts with the fluid to be “in a vicinity”, claims 2-9 and 11-14 are rejected for their dependency on instant claim 1.
As to claims 1, 2-4 and 15, the examiner is unclear as to exactly what structural piece applicant is referring to with “an orifice”. Applicant seems to show most clearly in figure 12 a blown up view of the area around the orifice. However, the orifice itself as is commonly known in the art is exactly that, an opening where fluid flows “an opening (such as a vent, mouth, or hole) through which something may pass” https://www.merriam-webster.com/dictionary/orifice. This is even labeled as such with O in figure 12/13. As such it is entirely unclear how a void in space can be said to be conductive as claimed. Instead, as shown in figures 12 and 13, the structure that forms the orifice (R) can be said to be conductive, but the orifice itself is clearly not a distinct structure. A structure that has for example some conductive material in addition to the conductive portion R. In other words the orifice itself is in no way conductive as it is simply a void of air not in use, or a void where fluid flows through when in use. This creates somewhat of a compounding issue as the structure R as shown in figures 12 and 13 is defined as the “conductive portion”. Therefore in claims 2 and 15, when applicant defines the orifice as having conductivity, it is unclear how the orifice which is essentially a hole in the conductive portion can also somehow be distinctly conductive. For examination purposes the examiner is not interpreting the orifice to be a separate structure as claimed, but rather the orifice is simply a geometric distinction of the conductive portion, in other words that the conductive portion contains within it an orifice. The examiner is unsure in claims 3-4 if there is a machine translation issue as to state that the orifice (hole) somehow is “supported” by the conductive portion, and where the hole/orifice is replaceable, does not make sense relative to the instant disclosure. What the examiner assumes applicant means, and therefore the claim is being interpreted as, is that “supported” should read –contains--, and further the conductive portion is replaceable, as again it is illogical to state that a hole is replaceable, as it isn’t technically a structure. Claims 5-14 and 16-19 are rejected for their dependency on instant claims 1-4 and 15.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-9 and 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kanda (U.S. Patent No. 9,034,259 B2, where the examiner is using Kanda1 hereinafter for citations) in view of Kanda (U.S. Patent No. 7,417,734 B2, where the examiner is using Kanda2 hereinafter for citations).
As to claims 1 and 20, Kanda1 discloses and shows in figures 1 and 6, a particle sorting device comprising:
an irradiation unit (optical source that is disclosed to produce the laser beam as explicitly shown) that irradiates a part of a flow path (i.e. path defined by sample conduit 13) through which a fluid containing particles (P) flows with laser light (col. 4, ll. 36-40);
a detection unit (optical detector as disclosed but not shown on the other end of fiber 37) that detects light generated by irradiation of the laser light (col. 4, ll. 36-50);
an orifice (opening area explicitly shown in figure 6 where fluid flows through) that is disposed at an end of the flow path and discharges the fluid (this function is as explicitly shown in the figure) (col. 8, ll. 29-50);
a portion (i.e. nozzle plate 22) disposed in a vicinity of a position where the fluid is formed into a droplet (as explicitly shown right before the fluid turns into droplets (D) in figure 6) (col. 4, ll. 32-35; col. 6, ll. 15-20); and
a charging unit (electrical charger disclosed but not show, where the examiner is taking it as the structural equivalent for performing an identical function) that applies a charge to the conductive portion on a basis of light data detected by the detection unit (col. 6, ll. 15-20).
Kanda1 does not explicitly disclose where the nozzle plate is conductive.
However, Kanda2 does disclose and shown in figure 4 and in (col. 7, ll. 66 thru col. 8, l. 11) a similar conductive portion where they explicitly define the structure as an “electrode 93”. The examiner takes Office Notice that “charging” electrodes are commonly the result of using a metal (i.e. being a conductive material).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Kanda1 where the nozzle plate is conductive in order to provide the advantage of expected results, as obviously in using something common like a metal one can charge the particles as desired in a low cost, predictable manner as disclosed.
The subject matter of claims 1 and 20 relate in that the technical features of apparatus claim 1 are in each case suitable for implementing the method of claim 20, therefore the method is obvious in view of the above apparatus rejection.
As to claim 15, Kanda1 discloses and shows in figures 1 and 5, an orifice unit for a particle sorting device, comprising:
an orifice that is partially (by virtue of comprising the conductive portion forming part of it, it is being interpreting as reading on the noted element) or entirely conductive (opening area explicitly shown in figure 6 where fluid flows through) (col. 8, ll. 29-50); and
a portion (i.e. nozzle plate 22) that supports the orifice (i.e. by virtue of making up part of its structure as explicitly shown in figure 6) (col. 4, ll. 32-35; col. 6, ll. 15-20).
Kanda1 does not explicitly disclose where the nozzle plate is conductive.
However, Kanda2 does disclose and shown in figure 4 and in (col. 7, ll. 66 thru col. 8, l. 11) a similar conductive portion where they explicitly define the structure as an “electrode 93”. The examiner takes Office Notice that “charging” electrodes are commonly the result of using a metal (i.e. being a conductive material).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Kanda1 where the nozzle plate is conductive in order to provide the advantage of expected results, as obviously in using something common like a metal one can charge the particles as desired in a low cost, predictable manner as disclosed.
As to claim 2, Kanda1 as modified by Kanda2 discloses a particle sorting device , wherein a part or all of the orifice has conductivity (by virtue of comprising the conductive portion forming part of it, it is being interpreting as reading on the noted element) (col. 8, ll. 29-50, where the conductivity aspect has already been modified above, the same motivation/modification above also applies here).
As to claim 3, Kanda1 as modified by Kanda2 discloses a particle sorting device, wherein the conductive portion supports the orifice (i.e. by virtue of making up part of its structure as explicitly shown in figure 6) (col. 4, ll. 32-35; col. 6, ll. 15-20).
As to claim 4, Kanda1, discloses a particle sorting device, wherein the orifice is replaceable (col. 8, ll. 29-50, where the examiner is interpreting if the parts that define the orifice are detachable, they are also implicitly replaceable).
As to claim 5, Kanda1 discloses a particle sorting device, wherein the conductive portion is replaceable (col. 8, ll. 29-50, again since the conductive portion 22 is detachably engaged with the sorting device it is also being found to implicitly be replaceable).
As to claims 6 and 16, Kanda1 discloses a particle sorting device, wherein the conductive portion includes a holding portion held by a user at a time of replacement (col. 8, ll. 29-50, where the examiner is interpreting the exterior surface as a “holding portion” as applicant has failed to geometrically define in any manner a limitation to the holding portion, the language “by a user at a time of replacement” is intended use, and the prior art is being interpreted as capable of said use).
As to claims 7 and 17, Kanda1 does not explicitly disclose a particle sorting device, wherein the conductive portion includes a connection portion connected to the charging unit.
However, Kanda2 does disclose and show in figure 4 and in (col. 7, l. 66 thru col. 11) the use of electronic charging circuitry 91 connected to the conductive portion 93 via a wire as explicitly shown. Obviously the basic concept of using a wire to relay a voltage/current to the conductive portion could also be used in Kanda1.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Kanda1 with a particle sorting device, wherein the conductive portion includes a connection portion connected to the charging unit in order to provide the advantage of expected results and increased efficiency as obviously using a wire to relay voltage/current is the most common way known in all measuring and test, further in doing so increased charging efficiency vs a wireless based charging system.
As to claim 8, Kanda1 discloses a particle sorting device, wherein the conductive portion is disposed so as to abut on the orifice (Fig. 7, col. 8, ll. 29-50; again conductive portion 22 forms part of the orifice and specifically abuts against section 28 which also forms part of the orifice).
As to claim 9, Kanda1 discloses and shows in figure 6, a particle sorting device, wherein the orifice is formed in a replaceable chip (col. 8, ll. 29-50; where the examiner is interpreting that since the orifice is constructed via multiple parts interlinked via O-rings, it can be interpreted as a replaceable chip as each part can be replaced clearly as necessary, the examiner notes that the term “chip” has no explicitly geometric requirements in the optical art as they come in all shapes/sizes).
As to claim 11, Kanda1 discloses a particle sorting device, wherein the charging unit corrects a charge amount of a droplet (col. 6, ll. 15-20; where the examiner is interpreting the prior art as capable of the intended use based on the voltage/polarity modification explicitly disclosed in Kanda1).
As to claim 12, Kanda1 discloses and shows in figure 1, a particle sorting device, wherein the conductive portion is disposed downstream of a region irradiated with the laser light in a flow direction of the fluid (col. 4, ll. 28-40).
As to claim 13, Kanda1 does not explicitly disclose wherein the conductive portion is formed of one or more conductive materials selected from a group including a metal, a conductive resin, and a non-conductor having a surface to which conductivity is imparted.
However, Kanda2 does disclose and shown in figure 4 and in (col. 7, ll. 66 thru col. 8, l. 11) a similar conductive portion where they explicitly define the structure as an “electrode 93”. The examiner takes Office Notice that “charging” electrodes are commonly the result of using a metal (i.e. being a conductive material).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Kanda1 wherein the conductive portion is formed of one or more conductive materials selected from a group including a metal, a conductive resin, and a non-conductor having a surface to which conductivity is imparted in order to provide the advantage of expected results, as obviously in using something common like a metal one can charge the particles as desired in a low cost, predictable manner as disclosed.
As to claim 14, Kanda1 discloses a particle sorting device, wherein the particle includes a cell (col. 4, ll. 21-25).
As to claim 18, Kanda1 disclose an orifice unit for the particle sorting device, wherein the orifice unit for the particle sorting device is attached in a screwing manner or a lateral insertion manner to an end of a flow path through which a fluid containing particles flows (col. 8, ll. 29-50; where the examiner is interpreting that layer 22 can be inserted in a lateral manner if desired as thus is capable of the intended use of claim 18, please see MPEP 2114 (II)).
As to claim 19, Kanda1 discloses an orifice unit for the particle sorting device, further comprising a positioning mechanism for attachment to the end of the flow path (col. 8, 35-38; where O-ring 27a for example helps control the positional location of piece 28 relative to 10).
Claim(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kanda1 in view of Kanda2 further in view of Tanase et al. (U.S. PGPub No 2015/0285726 A1).
As to claim 10, Kanda1 in view of Kanda2 does not explicitly disclose a particle sorting device, further comprising a ground electrode disposed in a vicinity of a position where the fluid is formed into a droplet, wherein the charging unit applies a charge to the ground electrode.
However, Tanase does disclose and show in figure 1 and in ([0005]; [0071] the use of ground electrodes in a flow cytometry system in the vicinity of where the fluid is formed into a droplet. Further, Tanase discloses that the second charging electrode 5 is connected to ground, as such obviously it can be charged or function as a ground.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Kanda1 in view of Kanda2 with a particle sorting device, further comprising a ground electrode disposed in a vicinity of a position where the fluid is formed into a droplet, wherein the charging unit applies a charge to the ground electrode in order to provide the advantage of increased efficiency as noted by Tanase using a grounded electrode eliminates influence of high potential of the electrode pair changing the travelling direction of the droplets.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P LAPAGE whose telephone number is (571)270-3833. The examiner can normally be reached Monday-Friday 8-5:30.
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/Michael P LaPage/Primary Examiner, Art Unit 2877